Utility Models in Japan - WIPO · 2012. 9. 14. · - The Utility Model system has no substantive examination. - A party has to determine whether a registered utility model right would

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Utility Models in JapanUtility Models in Japan

September 3, 2012

Shimpei Yamamoto

Director of Regional Policy Office,

The Japan Patent Office

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1.1. ObjectivesObjectives of the Utility Model System: of the Utility Model System:

UM Law Revised to Grant UM Rights FasterUM Law Revised to Grant UM Rights Faster

2.2. Evaluations of UM System by UsersEvaluations of UM System by Users

after the 1993after the 1993 RevisionRevision

3. 3. IntroIntroduction of Reports on Technical Opinion; duction of Reports on Technical Opinion;

and Procedures of Enforcementand Procedures of Enforcement

4. Comparison of the Utility Model System 4. Comparison of the Utility Model System

among Japanamong Japan--ChinaChina--KoreaKorea

AgendaAgenda

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1.1. ObjectivesObjectives of the Utility Model System; of the Utility Model System;

UM Law Revised to Grant UM Rights UM Law Revised to Grant UM Rights

FasterFaster

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Milestones of the Utility Model SystemMilestones of the Utility Model System

1905

1993

Utility Model Law Established

1921 1921 Revision

1959 1959 Revision

・・・

・・・

1993 Revision(Changed to system in which substantive requirements are not

examined）

2004 2004 Revision

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Number of Applications

year

Utility Model Applications

Patent Applications

Period of high

Economic growth

Number of Patent and Utility Model ApplicationsNumber of Patent and Utility Model Applications

1993 Revision

Cross Point

(In units of 10,000)

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Objectives of the Utility Model Objectives of the Utility Model LLawaw

Issues before Utility Model Law was established

- Many patent applications filed by foreign enterprises were patented

- Many patent applications filed by domestic enterprises filed were rejected

(Due to technological gap between Japan and developed countries at that time)

Utility Model Law established in 1905

- Protecting minor inventions

- Encouraging development of domestic industries

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Subject of the Utility Model LawSubject of the Utility Model Law

Article 1

The purpose of this Act is to encourage the development of

devices by promoting the protection and utilization of such

devices as they relate to the shape or structure of an article

or combination of articles, and thereby contribute to the

development of industry.

Utility Model Law

- Methods cannot be protected under the Utility Model Law.

（Methods can be protected under the Patent Law）

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Issues before the 1993 revision

UM applications were examined in the same way as patent applications.

- Long pendency of examination process

Background of the 1993 RevisionBackground of the 1993 Revision

Insufficient

protection

Overview of the 1993 revision

- Substantive requirements such as novelty and inventive step are

not examined

- Only basic requirements and formality were examined/checked.

- This resulted in faster protection of these devices

・Applicants want to use devices right after filing・Some devices have short product lives

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Procedures for Obtaining Utility Model RightsProcedures for Obtaining Utility Model Rights

Publication of Utility Model Gazette

Registration

2 to 3 months

Application

Examination of Basic Requirement

Formality Check Amendment Order

Amendment

Dismissal

No Amendment

Fast protection

The Substantive Requirements (Novelty and Inventive Step etc.)

are not required to obtain a Utility Model Right.

Checking for

1) Violations of protection

2) Violations of public order and

morality

3) Violations of unity

4) Unclear/ambiguous descriptions,

claims, drawings

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2. Evaluations of UM System by Users2. Evaluations of UM System by Users

after the 1993after the 1993 RevisionRevision

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Corporations capitalized at 100 million yen or moreCorporations capitalized at 100 million yen or more

Yes

(56%)

No

(44%)

Are there any merits to using the UM

System?

N=414

Evaluations conducted between July 25, 2003 and Aug 20, 2003

N=453(Multiple responses possible)

Specific Merits

Registration is possible even if there are

grounds for invalidation (6%)

Possible to obtain rights

even for minor

inventions (17%)

Costs are low

(13%)

Length of time it

takes to obtain

registration is

short (43%)

Registration procedures

are easy (21%)

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Corporations capitalized at less than 100 million yenCorporations capitalized at less than 100 million yen


N=206 N=428(Multiple responses possible)

Yes (85%)

No (15%)

無効理由があっても登録可（７％）


even for minor inventions

(22%)

Registration is possible even if there are


Costs are low

(17%)

Registration procedures

are easy (25%)

Length of time

it takes to

obtain

registration is

short (30%)


System?

Specific Merits

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IndividualsIndividuals


N=73N=167(Multiple responses possible)

Yes (85%)

No (15%)

無効理由があっても登録可（７％）Registration is possible even if there are


Costs are low

(19%)

Registration

procedures are

easy (18%)

Length of time

it takes to

obtain

registration is

short (26%)


System?

Specific Merits


even for minor inventions

(29%)

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Comparison of the Specific MeritsComparison of the Specific Merits

29%26%Individuals

22%30%Corporations

capitalized at less

than 100 million yen

17%43%Corporations

capitalized at 100

million yen or more

Possible to obtain

rights even for

minor inventions

Length of time it

takes to obtain

registration is short

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3. 3. IntroIntroduction of Reports on duction of Reports on

Technical Opinion; and Procedures Technical Opinion; and Procedures

of Enforcementof Enforcement

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Objectives of Reports on Technical OpinionObjectives of Reports on Technical Opinion

No substantive examination

- The Utility Model system has no substantive examination.

- A party has to determine whether a registered utility model right

would satisfy the substantive requirements.

Difficulty in determining the validity of UM rights

- Determining the validity of UM rights requires capable, technical

experts in the field.

Introducing reports on utility model technical opinions

- The JPO provides objective opinions to determine the patentability,

i.e., novelty, inventive step, etc. of claimed devices.

(Reports do not include judgment of description requirements of

description and claims.)

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Enforcement of Utility Model RightsEnforcement of Utility Model Rights

Registration

Finding infringements

Requesting Report on Technical Opinion (Article 12)

Warning given based on Report on Technical Opinion (Article 29-2)

Enforcement of Utility Model Rights

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Responsibility of UM Rights Owners Responsibility of UM Rights Owners

Responsibility of Owners

-Owners of UM Rights are liable to compensate for damage

when the subject rights are deemed to be invalid (Article 29-3).

Exception

- However, in the case rights were exercises or warnings were

given based on positive opinions in the report on technical

opinion, owners can be exempted from any liability to

compensate for damage (Article 29-3).

According to Utility Model System in Japan, a devise can be registered

without substantive examination.

Therefore, Article 12 (Requesting the report), 29-2 (Warning with the

report), and 29-3 (Responsibility of owners) are important regulations in

Japan.

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44．．．．．．．．ComparisonComparison of the Utility Model of the Utility Model

System among JapanSystem among Japan--ChinaChina--KoreaKorea

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Low

（（（（Substantive

examination)

High

（（（（Non-substantive

examination)

Average

（（（（Applicants must give

warnings in which reports

on technical opinion are

to be submitted, prior to

exercising their rights. )

Third-parties’ perspectives:

・・・・In terms of the possibility of

exercising rights that have a

high possibility of being

invalidated in the first place

Low


examination)

High


examination)

Average

（（（（Applicants must give

warnings in which reports

on technical opinion are

to be submitted, prior to

exercising their rights. )

Right holders perspective:

・・・・ In terms of the possibility

of exercising rights that have

a high possibility of being

invalidated in the first place

High


examination)

Low


examination)

Average


examination; however,

applicants must request

reports on technical

opinion before they can

exercise their rights.)

Administrative perspective:

・・・・In terms of procedural costs

KoreaChinaJapan

Merits & Demerits of Each CountryMerits & Demerits of Each Country’’s Systems System

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Overview of Comparison among JapanOverview of Comparison among Japan--ChinaChina--KoreaKorea

Procedural Costs LowHigh

General substantive

examination

General

non-substantive

examination**

Non-substantive examination

based on a special system*

* Japan requires applicants to give warnings in which they submit reports on technical opinion,

prior to exercising their rights.

** China does not require reports on technical opinion to be submitted before rights are exercised.

Predictability

is low

Predictability

is high

Validity of

right before

litigation

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Comparison of the Utility Model LawComparison of the Utility Model Law

Only onceNo limitation (any

number possible)

Number of requests that can be

made to receive reports on

technical opinion

YesNoNoSubstantial examination before

registration

No

(Already evaluated

through substantial

examination)

NoYesObligation to present report on

technical opinion before

exercising rights

Owner or Interested

party

Any person can

request

Eligible claimants for reports on

technical opinion

NoNoYes

(compensation for

damage)

Owner of the UM right has

liability to compensate for

damage when the exercised UM

right is deemed invalid.

10 years10 years10 yearsTerms of protection

(from the filing date)

shape or structure

or combination of

an article (s)

shape or structure

or combination of

an article (s)

shape or structure

or combination of

an article (s)

Subject matter

KoreaChinaJapan

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Features of the Utility Model SystemFeatures of the Utility Model System

•Under the Utility Model system in Japan, substantive examination

of requirements is not conducted in registering the UM rights, in

order to provide protection of rights as soon as possible.

Merit: enables rights for minor inventions to be exercised quickly.

•On the other hand, before rights can be exercised, a warning

containing the report on technical opinion must be given.

For rights-holders and third parties, this provides a system that

increases the level of predictability in regard to the validity of the rights.

•Whenever deciding to set up a new UM system, all concerned individuals

and entities need to give sufficient consideration to both the merits and

demerits that could arise in line with introducing such a system.

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Thank youThank you

Documents

Utility Models in Japan - WIPO · 2012. 9. 14. · - The Utility Model system has no substantive examination. - A party has to determine whether a registered utility model right would